Standard Essential Patents

Anticompetitive practices

The Hague Court of Appeal delivers its judgment on an alleged infringement of patent essential to the Universal Mobile Telecommunications System standard (Philips / ASUS)
Van Bael & Bellis (Brussels)
On 7 May 2019, the Court of Appeal of the Hague delivered its judgment in a case pitting Philips against ASUS regarding the alleged infringement of Philips’ European patent EP 1 623 511, which was considered essential to the High Speed Uplink Packet Access (“HSUPA”) protocol of the Universal (...)

The Paris Court of Appeal delivers the first judgement on FRAND terms and applies the French legislation implementing the trade secrets directive (Conversant / LG)
Van Bael & Bellis (Brussels)
On 16 April 2019, the Paris Court of Appeal delivered a judgment in Conversant v. LG, a case dealing with the concept of licensing under fair, reasonable and non-discriminatory (“FRAND”) terms. While the court did not set a much-anticipated FRAND royalty rate, the case is noteworthy because of (...)

The EU Court of Justice rules that royalties for unpatented technology are not necessarily anticompetitive (Genentech)
McDermott Will & Emery (Paris)
EU COURT RULES THAT ROYALTIES FOR UNPATENTED TECHNOLOGY ARE NOT NECESSARILY ANTICOMPETITIVE* On 7 July 2016, the Court of Justice of the European Union (CJEU) handed down a judgment on whether Article 101 of the Treaty on the Functioning of the European Union (TFEU) must be interpreted as (...)

The UK Court of Appeal overturns a UK Patents Court decision and allows competition law arguments in a FRAND dispute in relation to Standard Essential Patents (Unwired Planet / Huawei / Samsung / Ericsson)
Monckton Chambers (London)
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Monckton Chambers (London)
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Monckton Chambers (London)
Court of Appeal reinstates Samsung’s case on non-discrimination and FRAND*On Friday 27 May, the Court of Appeal handed down an important judgment on the interplay between competition law and the licensing of essential patents.This is part of a landmark patent infringement case where Unwired (...)

The UK Court of Appeal allows appeal from UK Patents Court decision on competition law arguments in a FRAND dispute in relation to standard essential patents (Unwired Planet / Huawei / Samsung / Ericsson)
Gowling WLG (London)
Unwired Planet v Huawei & Samsung: Samsung Given Permission To Appeal Strike Out*Summary Unwired Planet asserts that Samsung and Huawei have infringed several ’standard essential patents’ (SEPs) relevant to mobile telecommunications standards. Samsung and Huawei have defended the claims based (...)

The UK Patents Courts considers Articles 101 and 102 TFEU in FRAND dispute relating to standard essential patents (Unwired Planet / Huawei / Samsung / Google / Ericsson)
University College London
Give us a FRAND: Unwired Planet v Huawei & Samsung*On 29 January, Mr Justice Birss gave judgment in the second UK patent trial between Unwired Planet, Samsung and Huawei, holding that two of Unwired Planet’s patents are invalid for obviousness. The case concerns patents that were declared (...)

The Chinese State Administration for Industry and Commerce publishes guidelines on application of the anti-monopoly law to intellectual property rights
Jones Day (Beijing)
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Gibson Dunn (Hong Kong)
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Jones Day (Beijing)
After years of discussions, China’s State Administration for Industry and Commerce finally has released its guidelines on the application of the PRC Anti-Monopoly Law ("AML") to intellectual property rights ("Guidelines"). The Guidelines will come into force on August 1, 2015. The Guidelines (...)

The US DoJ allows a standards association’s new patent policy for wi-fi standards, finding it potentially pro-competitive (IEEE)
Constantine Cannon (Washington)
Feds Green-Light Institute’s New Patent Policy For Wi-Fi Standards, Finding It Potentially Procompetitive* The Antitrust Division of the U.S. Department of Justice announced on Monday that it would not challenge recent revisions to the Patent Policy of the Institute of Electrical and (...)

The Electronic Intellectual Property Center of China’s Ministry of Industry and Information Technology (MIIT) releases a draft “Template for Intellectual Property Policies in Industry Standardization Organizations”
Skadden, Arps, Slate, Meagher & Flom (Brussels)
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Skadden, Arps, Slate, Meagher & Flom (Washington DC)
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Skadden, Arps, Slate, Meagher & Flom (Hong Kong)
The Electronic Intellectual Property Center of China’s Ministry of Industry and Information Technology (MIIT) has released a draft “Template for Intellectual Property Policies in Industry Standardization Organizations” (the Draft Template), seeking public comments by January 30. The Draft Template (...)

The US Court of Appeals for the Federal Circuit decides on the reasonableness of licensing royalty for standard-essential patents (Ericsson / D-Link)
Constantine Cannon (Washington)
Reasonableness Of Licensing Royalties Is On Trial As Courts And Standard-Setting Organizations Wrestle With Standard-Essential Patents* The ongoing battle over what constitutes a “reasonable” licensing royalty for standard-essential patents has now been joined by the U.S. Court of Appeals for (...)

The Advocate General Wathelet renders his opinion and provides a fresh perspective on FRAND licenses (Huawei / ZTE)
DLA Piper (Brussels)
The long-awaited Opinion delivered by Advocate General Wathelet on 20 November 2014 in the dispute opposing Huawei and ZTE (Case C-170/13) sheds a new and bright light on the legal landscape for injunctions in SEP-FRAND licensing contexts, provided the Court of Justice follows the Advocate (...)

The U.S. FTC files a complaint against five pharmaceutical companies for pay-for-delay settlements (AbbVie)
Skadden, Arps, Slate, Meagher & Flom (New York)
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Skadden, Arps, Slate, Meagher & Flom (Washington DC)
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Skadden, Arps, Slate, Meagher & Flom (New York)
On September 8, 2014, the Federal Trade Commission (FTC) filed a federal antitrust complaint in the United States District Court for the Eastern District of Pennsylvania against defendants AbbVie, Abbott Laboratories, Unimed Pharmaceuticals, Besins Healthcare and Teva Pharmaceuticals alleging (...)

The US Supreme Court rules that reverse patent settlements may violate antitrust law (Actavis)
Womble Bond Dickinson (Washington D.C.)
FTC v. Actavis, Inc.: Supreme Court Rules That Reverse Patent Settlements May Violate Antitrust Laws* On June 17, 2013, in FTC v. Actavis, Inc., the Supreme Court ruled that "reverse patent settlements" may violate the Sherman Act even though the anticompetitive effects of the settlement fall (...)

The U.S. FTC files amicus curiae brief supporting generics’ claim in patent dispute (Actelion Pharms / Apotex)
DLA Piper Weiss-Tessbach (Vienna)
U.S. FTC files amicus curiae brief supporting generics’ claim in patent dispute* On 11 March 2013 the U.S. Federal Trade Commission (“FTC”) filed an amicus curiae brief in the case Actelion Pharms Ltd. V. Apotex Inc. which is being heard in the U.S. District Court for New Jersey supporting the (...)

The U.S. District Court for the Northern District of California dismisses with leave to amend antitrust claims against high-tech producers employing the android operating system (Cascades Computer Innovation / RPX)
Orrick, Herrington & Sutcliffe (San Francisco)
Can An “Anti-Patent Troll” Be a Monopsonist or a Section 1 Conspirator?* A recent interesting case suggests that “anti-patent trolls” may in theory face antitrust liability. In Cascades Computer Innovation LLC v. RPX Corp., 2013 U.S. Dist. LEXIS 10526 (N.D. Cal. Jan. 24, 2013), Judge Yvonne (...)

The US FTC imposes limits on enforcing FRAND licensing of standards-essential patents through the threat of seeking of injunctions (Google / Motorola)
International Center for Law & Economics (Portland)
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International Center for Law & Economics (Portland)
Introduction In January of 2013, the Federal Trade Commission and Google (acting through its subsidiary, Motorola Mobility) signed a Consent Order ending the agency’s investigation into a number of practices. Much of the Order is aimed at imposing antitrust-based limits on the allowable process (...)

A US Court of Appeal for the Federal Circuit provides additional guidance regarding the limits on standing to bring a Walker Process antitrust claim against a patent owner (Ritz Camera & Image / SanDisk)
Gill Jennings & Every (London)
The Court of Appeal for the Federal Circuit recently provided additional guidance regarding the limits on standing to bring a Walker Process antitrust claim against a patent owner and arguably expanded the class of parties eligible to bring such a claim. Under the Supreme Court’s holding in (...)

The U.S. District Court for the Eastern District of Pennsylvania denies motion to dismiss an action against a SSO in a case of conspiracy to exclude plaintiff’s technology from the latest generation global standard for mobile telecommunications (TruePosition / Ericsson)
Davis Wright Tremaine (Washington DC)
Antitrust & Associations: “Standard Setting Can Be Risky Business”* Virtually every industry, from telecommunications to agriculture, has benefited from standard-setting organizations (SSOs), whose collaborative work can advance technology, promote health and safety, and enhance quality and (...)

The US Court of Appeals for the Third Circuit rejects Scope-of-Patent test in antitrust challenge to patent settlements (K-Dur)
Wolters Kluwer (Riverwoods)
Third Circuit Rejects Scope-of-Patent Test in Antitrust Challenge to K-Dur Patent Settlement* Reverse payments settlements between patent holders and would-be generic competitors in the pharmaceutical industry should be reviewed under a “quick look” rule of reason analysis based on the economic (...)

The U.S. District Court for the Eastern District of Pennsylvania dismisses claims of anti-competitive exclusion of positioning technology from standards (Trueposition / Ericsson)
Stanford University - Stanford Law School
U.S. District Court dismisses claims of anti-competitive exclusion of positioning technology from standards* On 6 January 2012 the U.S. District Court for the Eastern District of Pennsylvania granted motions to dismiss claims that manufacturers of mobile telecommunications products conspired (...)

The EU Commission opens proceedings against two manufacturers of refrigerants used in car air conditioning (Honeywell / du Pont)
Ashurst (Milan)
European Commission investigates DuPont and Honeywell practices in relation to new refrigerant* On 16 December 2011 the European Commission opened proceedings to investigate alleged anti-competitive practices relating to the development of a new generation refrigerant for air conditioning (...)

The EU Commission opens investigation against two pharmaceutical companies on account of patent settlement agreement (Cephalon / Teva)
Van Bael & Bellis (Brussels)
On 28 April 2011, the European Commission opened of its own motion formal competition proceedings against Cephalon, Inc. (“Cephalon”) and Teva Pharmaceutical Industries, Inc. (“Teva”) on account of a patent settlement agreement between the parties. Under the agreement, Teva undertook not to sell (...)

The U.S. House Judiciary Committee holds a hearing on competition in the evolving digital marketplace
Stanford University - Stanford Law School
U.S. hearing on competition in the digital marketplace* On 16 September 2010 the Subcommittee on the Courts and Competition Policy of the U.S. House Judiciary Committee held a hearing on Competition in the Evolving Digital Marketplace. A prepared statement of the U.S. Federal Trade (...)

The US Court of Appeals for the Federal Circuit clarifies requirements for the patent misuses (Princo)
Stanford University - Stanford Law School
U.S. Federal Circuit (en banc) finds no patent misuse in Princo* On 30 August 2010 the U.S. Court of Appeals for the Federal Circuit (en banc, 8-2) found – in contrast to an earlier ruling by a panel of the Court – that an alleged agreement between Philips Corp. and Sony Corp. to suppress a (...)

The EU Commission publishes its second report on the monitoring of patent settlements in the pharmaceutical sector
Ashurst (Milan)
European Commission report shows decrease of potentially problematic patent settlements* On 5 July 2010, the Commission published its second report on the monitoring of patent settlements in the pharmaceutical sector. The report shows that the number of patent settlements that may fall afoul (...)

The EU Commission publishes draft rules for the assessment of horizontal cooperation agreements under competition law
Stanford University - Stanford Law School
European Commission publishes draft guidelines on horizontal agreements and R&D block exemption regulation* On 4 May 2010 the European Commission published, for public consultation, draft guidelines on horizontal agreements and two related draft block exemption regulations, including one (...)

The US District Court for the Northern District of Georgia grants defendants’ motions to dismiss antitrust claims brought by the FTC as regards reverse payments settlements and related commercial arrangements (Androgel)
Stanford University - Stanford Law School
U.S. District Court dismisses AndroGel reverse payment antitrust claims* On 22 February 2010 the U.S. District Court for the Northern District of Georgia (Atlanta Division) granted defendants’ motions to dismiss antitrust claims brought by the Federal Trade Commission (“FTC”) among others that (...)

The US District Court for the Northern District of Georgia dismisses the FTC’s "pay-for-delay" antitrust lawsuit ruling that the contested settlements are not an unreasonable restraint of trade (Androgel Litigation)
Skadden, Arps, Slate, Meagher & Flom (Washington DC)
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Skadden, Arps, Slate, Meagher & Flom (Washington DC)
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Fordham Competition Law Institute - FCLI (New York)
On February 22, 2010, Judge Thomas W. Thrash, Jr. dismissed the Federal Trade Commission’s (FTC) antitrust lawsuit alleging that Solvay Pharmaceuticals (Solvay) conspired with generic drug makers Watson Pharmaceuticals (Watson) and Par Pharmaceuticals (Par) to delay generic competition for the (...)

The US Court of Appeals for the Second Circuit holds that the reverse payment settlement between branded and generic pharma companies did not violate the antitrust laws because the exclusionary effect of the agreement did not exceed the scope of the patent (Tamoxifen Citrate)
Axinn Veltrop & Harkrider (Hartford)
Over the past decade, practitioners, policy makers and commentators have increasingly debated the issues involved when the antitrust laws intersect with patent rights. Both the antitrust and patent laws are designed to promote competition and, as a result, societal wellbeing. However, the (...)

The German Federal Court declares settlement concerning royalties for shipments to countries outside the territorial scope of a patent to be void (“Abgasreinigungsvorrichtung”)
Helmut Schmidt University of the Armed Forces (Hamburg)
I. Facts of the case and case history The claimant/licensee produces devices for cleaning exhaust fumes. The defendant/licensor owns a European patent protecting a specified process for cleaning exhaust fumes, with territorial effect (seeEuropean Patent Convention, Art. 3) in Germany, France, (...)

The U.S. FTC publishes a report on generic drug entry prior to patent expiration raising issues on patent-shortening settlement agreements
White & Case (Washington)
The Federal Trade Commission’s recent report, Generic Drug Entry Prior to Patent Expiration (Federal Trade Commission, Generic Drug Entry Prior to Patent Expiration: An FTC Study, July 2002, ("FTC Report")), raises a number of competition issues that merit further discussion and research. This (...)

Unilateral Practices

The Munich District Court issues an anti-suit injunction in patent litigation (Nokia)
McDermott Will & Emery (Düsseldorf)
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McDermott Will & Emery (Düsseldorf)
On July 11 2019, the Munich I District Court (Landgericht) issued an anti-suit injunction in patent litigation, preventing an automotive company from further pursuing proceedings in the United States. The Munich decision might become a landmark case because German courts have historically not (...)

The U.S. Northern District Court of California requires the holder of a standard essential patent for cellular communication to license it to all those willing to pay a fair, reasonable and non-discriminatory rate (Qualcomm)
McDermott Will & Emery (Washington)
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McDermott Will & Emery (Washington)
FTC Secures Partial Victory Requiring SEP Holder to License to All Comers in Antitrust Case* Summary Recently, a federal district court in California granted partial summary judgment for the US Federal Trade Commission (FTC) in an important intellectual property and antitrust case involving (...)

The UK Court of Appeal upholds a decision qualifying an essential patent offer to be FRAND (Huawei / Unwired Planet International)
Jindal Global University (Sonipat)
UK COURT OF APPEAL UPHOLDS FRAND INJUNCTION* Last week, the UK Court of Appeal upheld the findings of the High Court in an important case regarding standard essential patents (SEPs). Of particular significance, the Court of Appeal upheld the finding that the defendant, an implementer of SEPs, (...)

The U.S. District Court sets out FRAND rates for licensing standard essential patents for 2G, 3G and 4G wireless communications (TCL / Ericsson)
Cleary Gottlieb Steen & Hamilton (London)
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Latham & Watkins (London)
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Cleary Gottlieb Steen & Hamilton (New York)
On December 21, 2017, the District Court for the Central District of California issued TCL v. Ericsson, resolving a long-standing dispute between the parties concerning worldwide licenses to 2G, 3G, and 4G standard essential patents (SEPs) owned by Ericsson. The court determined that none of (...)

The U.S. District Court of California uses an economic approach to determine frand loyalty rates (TCL / Ericsson)
Edgeworth Economics (San Francisco)
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Edgeworth Economics (San Francisco)
On November 8, 2017, Judge James Selna of the US District Court in the Central District of California issued a decision (published later on December 21st) in TCL v. Ericsson determining fair, reasonable, and non-discriminatory (FRAND) royalty rates for Ericsson’s standard essential patent (SEP) (...)

The EU Commission publishes a communication on Standard Essential Patents
Van Bael & Bellis (Brussels)
On 29 November 2017, the European Commission published a communication titled “Setting out the EU approach to Standard Essential Patents” (the “Communication”) in which it seeks to offer guidance and recommendations in relation to the licensing, valuation and enforcement of Standard Essential (...)

The UK High Court of Justice issues an injunction prohibiting an undertaking from selling wireless telecommunications products in Britain due to its failure to enter into a worldwide patent license (Unwired Planet / Huawei)
Orrick, Herrington & Sutcliffe (Washington)
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Orrick, Herrington & Sutcliffe (Washington)
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Orrick, Herrington & Sutcliffe (London)
“Between a Rock and a Hard Place”: Unwired Planet v. Huawei and the Dangerous Implications of Worldwide FRAND Licenses I. Introduction The United Kingdom High Court of Justice (Patents) recently issued an injunction prohibiting Huawei from selling wireless telecommunications products in (...)

The EU Commission publishes roadmap on Standard Essential Patents
Van Bael & Bellis (Brussels)
On 10 April 2017, the European Commission published its roadmap on “Standard Essential Patents for a European digitalised economy” (the “Roadmap”) with the aim of supporting the development of the 5G mobile communications standard (“5G”) and the Internet of Things (“IoT”) universe. A standard (...)

The California Southern District Court receives a claim from a smartphone manufacturer against one of its suppliers over allegedly abusive wireless patents (Apple / Qualcomm)
DLA Piper Weiss-Tessbach (Vienna)
Apple and Qualcomm proceeding* In January 2017 Apple filed suit against Qualcomm over its allegedly abusive licensing practices regarding wireless patents. Apple filed patent, antitrust and breach of contract claims against Qualcomm; this could result in damages of billions of dollars. (...)

The Northern District Court of California Judge’s expresses possible abuses in asserting legal privilege (Qualcomm / FTC)
DLA Piper Weiss-Tessbach (Vienna)
U.S. Qualcomm Case Update: Privilege Assertions* On 22 March 2018, in a court hearing in the Qualcomm case, Judge Koh expressed her concern over possible abuses in asserting legal privilege over certain documents. In January 2017, the U.S. FTC sued Qualcomm, alleging that the company (...)

The Düsseldorf Regional Court orders injunctive relief for infringement of standard-essential patents in the first German judgments after CJEU decision on FRAND (SISVEL / Haier)
Arnold Ruess (Düsseldorf)
On 3 November 2015, the Düsseldorf Regional Court has issued judgments against Haier Deutschland GmbH und die Haier Europe Trading SRL, entities of Chinese Qingdao Haier Group. The Court ordered them to cease and desist from and render account on past infringements as well as determined Haier’s (...)

The EU Court of Justice holds standard-essential patent owner can abuse its position by seeking to enjoin infringement (Huawei / ZTE)
Constantine Cannon (Washington)
European Court Of Justice Holds Standard-Essential Patent Owner Can Abuse Its Position By Seeking To Enjoin Infringement* The European Court of Justice ruled today that the owner of a standard-essential patent abuses its dominant position when it seeks an injunction in an action for patent (...)

The EU Court of Justice rules on the circumstances in which a presumptively dominant SEP holder who has given a FRAND commitment may seek injunctive relief (Huawei / ZTE)
Quinn Emanuel Urquhart & Sullivan (Brussels)
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Quinn Emanuel Urquhart & Sullivan (Brussels)
The application of competition law to standard essential patents (SEPs) has been the subject of significant debate. The latest instalment was provided by the Court of Justice on 16 July 2015 with its much-anticipated preliminary ruling in Huawei v. ZTE, which concerns the circumstances in which (...)

The Finnish Competition Authority welcomes the judgement of the EU Court of Justice clarifying the position of standard-essential patent holders from the perspective of competition law (Huawei / ZTE)
Finnish Competition and Consumer Authority (Helsinki)
The Court of Justice of the European Union has clarified the position of standard-essential patent holders from the perspective of competition law* On Thursday 16 July, the Court of Justice of the European Union gave a judgment on the relationship between patent law and competition law. The (...)

The EU Court of Justice confirms practical steps to be taken by standard essential patent holders before seeking injunctions (Huawei / ZTE)
Norton Rose Fulbright (London)
Synopsis The Court of Justice of the European Union has ruled that the holder of a Standard Essential Patent that has committed to license its Standard Essential Patent on FRAND terms may be found in breach of the competition rules (Article 102 TFEU) by seeking an injunction against a (...)

The EU Court of Justice sets out specific requirements with which an SEP holder needs to comply in order to be able to seek an injunction without abusing its dominant position (Huawei / ZTE)
White & Case (Brussels)
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White & Case (Brussels)
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Preu Bohlig & Partner (Hamburg)
Standards lie at the heart of the digital economy – without standards, we would not have smartphones, tablets and other key parts of modern life. Europe’s highest court recently delivered a judgment in Huawei v. ZTE explaining when EU competition law will prevent holders of patents that are (...)

The EU Court of Justice holds standard-essential patent owner can abuse its position by seeking to enjoin infringement and sets out specific requirements (Huawei / ZTE)
Allen & Overy (London)
Background A Scattered European Landscape There is considerable inconsistency as to the availability of injunctive relief in relation to FRAND-obligated SEPs in the European Union. Whilst courts in the UK have yet to award an injunction on an SEP (and are seen as highly unlikely to do so), (...)

The EU Court of Justice rules on the seeking of injunctions in the context of standard-essential patents encumbered by FRAND in the technology sector (Huawei / ZTE)
McDermott Will & Emery (Brussels)
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McDermott Will & Emery (Brussels)
THE EUROPEAN UNION’S HIGHEST COURT RULES ON STANDARD-ESSENTIAL PATENTS INJUNCTIONS AND ABUSE OF DOMINANCE* The long-awaited ruling on the seeking of injunctions in the context of standard-essential patents encumbered by fair, reasonable, and non-discriminatory (FRAND) terms has been delivered (...)

The EU Court of Justice sets out specific requirements with which a SEP holder needs to comply in order to be able to seek an injunction without abusing its dominant position (Huawei / ZTE)
A patent is an exclusive right granted to an inventor for disclosing to the public an innovative technical solution. It does not necessarily oblige the patent owner to exploit that invention. Rather, it provides the right to exclude others from making, using, selling, offering for sale, or (...)

The Canadian Competition Bureau submits a draft of its upcoming intellectual enforcement property guidelines for public comment
U.S. Court of Appeals for the District of Columbia Circuit (Washington DC)
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George Mason University
Comments of U.S. Federal Trade Commissionner Joshua D. Wright and Judge Douglas H. Ginsburg on the Canadian Competition Bureau’s draft updated intellectual property enforcement guidelines* This comment is submitted in response to the Canadian Competition Bureau’s (the Bureau’s) draft stage 2 (...)

The Indian Competition Authority investigates mobile telephony SEP holder for practices contrary to FRAND terms (iBall / Ericsson)
Vaish Associates (New Delhi)
CCI commences another investigation against Ericsson in relation to Standard Essential Patents (SEPs)* CCI by its order dated May 12, 2015 has initiated an investigation against M/s Telefonaktiebolaget L M Ericsson (Publ) & M/s Ericsson India Private Limited for alleged contravention of (...)

The Chinese NDRC imposes its highest fine in Chinese antitrust history in an abuse of dominance case (Qualcomm)
Bird & Bird (London)
China’s Record $1 Billion Fine Against Qualcomm Could Signal A Tough New Antitrust Cop On The Block* China’s imposition of a nearly $1 billion fine on Qualcomm, the world’s largest supplier of smartphone chips, is noteworthy not just because it is a record-breaking antitrust fine for China, but (...)

The Chinese NDRC imposes its highest fine in an abuse of dominance case (Qualcomm)
King & Wood Mallesons (Beijing)
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King & Wood Mallesons (Beijing)
Qualcomm Investigation Finally Closed: Some Changes in Business Model in Addition to an RMB 6.088 Billion Fine* On 10 February 2015, the NDRC announced its decision in relation to the abuse of dominance investigation into Qualcomm. Following the announcement, the NDRC held a press conference (...)

The Chinese NDRC imposes changes in licensing practices (Qualcomm)
Cleary Gottlieb Steen & Hamilton (Washington)
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Cleary Gottlieb Steen & Hamilton (London)
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Cleary Gottlieb Steen & Hamilton (Brussels)
On March 2, 2015, China’s National Development and Reform Commission (“NDRC”), the agency responsible for investigating price-related violations of China’s Anti-Monopoly Law (the “AML”), published a decision (the “NDRC Decision”) regarding its investigation into alleged anticompetitive conduct by (...)

The Chinese NDRC applies rigorously the Anti-monopoly Law and fines a company for abuse of dominant position (Qualcomm)
Dacheng - Dentons (Shanghai)
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Dacheng - Dentons (Beijing)
On February 10, 2015, as one of the global antitrust enforcement powerhouses by now, the National Development and Reform Commission of PRC (“NDRC”) issued its sanction decision against the US semiconductor giant Qualcomm Incorporated (“Qualcomm), imposing a fine of RMB 6.088 billion (equivalent to (...)

The Advocate General Whatelet holds that the fact that a company owns a standard-essential patent does not necessarily mean that it holds a dominant position (Huawei / ZTE)
AnJie Law (Beijing)
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AnJie Law (Beijing)
Huawei vs. ZTE - The Advocate General Has Spoken* Background On April 5, 2013, the Landgericht Düsseldorf (a German regional court) referred a set of questions relating to injunctive relief over standard-essential patents (“SEPs”) to the European Court of Justice (“ECJ”) in connection with a (...)

The Advocate General Wathelet states that before seeking an injunction, a standard essential patent holder must inform an infringer that the latter needs a licence (Huawei / ZTE)
White & Case (Brussels)
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White & Case (Brussels)
Summary The Advocate General’s advisory Opinion in the Huawei v. ZTE FRAND Case (C-170/13) would, if followed by the full European Court of Justice (ECJ), usher in a significant shift in the playing field in German litigation on Standard essential patents (SEPs). Germany has been known as a (...)

The EU Commission publishes a decision finding that request and enforcement of an injunction before a German court regarding a smartphone standard essential patent constituted an abuse of dominant position (Motorola Mobility)
DLA Piper Weiss-Tessbach (Vienna)
Motorola Mobility won’t appeal the European Commission’s decision on patent licensing* Motorola Mobility (Motorola) has decided not to appeal the European Commission’s decision holding that it was abusing the way it licensed standard essential patents for mobile-phone standards. The Commission (...)

The EU Commission receives an antitrust complaint concerning patent licensing practices engaged by an owner of numerous standard-essential patents on telecommunications standards (ZTE / Vringo)
DLA Piper Weiss-Tessbach (Vienna)
ZTE files antitrust complaint with the European Commission against the patent-licensing practices of Vringo* On 18 June 2014 ZTE Corporation (ZTE) announced that it filed an antitrust complaint with the European Commission against Vringo Inc.’s (Vringo) patent-licensing practices. ZTE alleged (...)

The Chinese NDRC announces the suspension of an investigation on abuse of dominance against a U.S. wireless technology developer after receiving detailed commitments (Inter Digital Communications)
AnJie Law (Beijing)
Excessive pricing and standard-essential patents* On May 22 2014, China’s National Development and Reform Commission (NDRC) announced the suspension of the investigation against Inter Digital Communications (IDC), a US wireless technology developer, as the company had submitted detailed (...)

The IP High Court of Japan considers the enforceability of a standard essential patent after FRAND declaration (Apple / Samsung)
Fukami Patent Office (Osaka)
Japan IP High Court Decisi on of Samsung vs. Apple - Enforceability of Standard Essential Patent after FRAND declaration- * On May 16, 2014, the Grand Panel of the Japan IP High Court delivered a judgement in Samsung Electronics Co., Ltd. vs. Apple Japan LLC concerning three consolidated (...)

The EU Commission finds that the order sought and the enforcement of an injunction before a German Court on the basis of a smartphone standard essential patent constituted abuse of dominance (Motorola Mobility)
Ashurst (Milan)
European Commission finds that Motorola Mobility misused standard essential patents* On 29 April 2014, the European Commission European held that it has adopted a decision which found that Motorola Mobility’s (“Motorola”) seeking and enforcement of an injunction against Apple before a German (...)

The EU Commission approves commitments concerning certain standard essential patents relating to the European Telecommunications Standardisation Institute’s 3G UMTS standard (Samsung Electronics)
Ashurst (Milan)
European Commission makes commitments offered by Samsung Electronics legally binding* On 29 April 2014, the European Commission European issued a decision (see also the related press release) which made legally binding the commitments offered by Samsung Electronics (“Samsung”) in relation to (...)

The US DoJ issues statement as regards the closing of an investigation into the use of a portfolio of standards-essential patents on the pursuit of obtaining exclusion orders from the U.S. ITC relating to certain iPhone and iPad models (Samsung)
DLA Piper Weiss-Tessbach (Vienna)
U.S. DOJ closes its investigation of Samsung’s use of its SEPs* On February 7, 2014 the Department of Justice (“DOJ”) issued a statement declaring that it closed its investigation into Samsung Electronics Co. Ltd.’s (“Samsung”) use of its Standards-Essential Patent (“SEP”) portfolio to license (...)

The Competition Commission of India orders thorough investigation concerning an alleged abuse of dominant position in the in the market for ’Global System for Mobile Communication’ (Micromax / Ericsson)
Jindal Global University (Sonipat)
In the year 2013, an Indian company, Micromax Informatics Ltd. (hereinafter Micromax), filed a case before the Competition Commission of India (hereinafter CCI) against the Swedish telecoms equipment maker, Telefonaktiebolaget LM Ericsson (hereinafter Ericsson), for alleged abuse of its (...)

The Competition Commission of India orders investigation against Swedish telecom provider for abusing its dominant position in determining royalty under FRAND terms (Micromax Informatics Limited / Telefonaktiebolaget LM Ericsson)
University of Tilburg - Center for Law and Economics (TILEC)
Background In a recent matter, Micromax Informatics Limited vs Telefonaktiebolaget LM Ericsson (Publ), the Competition Commission of India has ordered an investigation by DG competition against Ericsson for abusing its dominant position in determining royalty under the FRAND terms. Micromax in (...)

The Guangdong High Court settles a high profile case dealing with refusal to licence intellectual property, which must be taken with caution (Huawei / IDC)
AnJie Law (Beijing)
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AnJie Law (Beijing)
A Rational Thinking on the Refusal to License Intellectual Property under China’s Antitrust Legal Framework* 1. Introduction This article will address the perplexing issue of refusal to license a patent or copyright to other undertakings conducted by intellectual property proprietors under (...)

The Guangdong High Court upholds Shenzhen Intermediate Court decision in abuse of dominance case involving IP rights (Huawei / Interdigital)
First Principles Economics (London)
Guangdong High Court largely upholds Shenzhen Intermediate Court decision, requires Interdigital to pay full amount of damages requested by Huawei, and stipulates 0.019% maximum patent licencing fee. On Monday 28th October 2013 the Guangdong High Court reached its decision in the ongoing (...)

The EU Commission consults on commitments to license on FRAND terms regarding use of standard essential patents (Samsung SEPs)
Garrigues (Brussels)
Samsung offers commitments to appease DG Comp* The most important (antitrust-related) news last week was the European Commission’s announcement that it will market test a commitment proposal submitted by Samsung regarding the enforcement of its SEPs (Standard Essential Patents) related to (...)

The EU Commission consults on commitments to close UMTS standards essential patents investigation (Samsung)
Ashurst (Milan)
European Commission tests Samsung’s proposed commitments to close UMTS standards essential patents investigation* Last 17 October 2013, the European Commission advised (see also here) that it is testing the commitments Samsung offered in connection with investigations into the alleged abuse of (...)

The US Court of Western District of Washington makes determinations of the RAND licensing terms for a standard essential patent (Microsoft / Motorola)
DLA Piper Weiss-Tessbach (Vienna)
U.S. District Court for the Western District of Washington makes determinations of RAND licensing terms* On 25 April 2013 Judge Robart issued the non-confidential version of his Findings of Fact and Conclusions of Law in the Microsoft Corp. v. Motorola Inc. case. This is the first time that a (...)

The EU Commission sends statement of objections to a telecom operator over standard essential patents (Motorola Mobility)
Van Bael & Bellis (Brussels)
,
Polybius (Brussels)
On 6 May 2013, the European Commission announced that it had formally sent Motorola Mobility a Statement of Objections (SO) over the company’s alleged misuse of mobile phone standard essential patents (SEPs). The Commission believes that Motorola Mobility abused its dominant position in (...)

The US Court of Western District of Washington finds that the patented technology didn’t play a significant role for the overall functionality of the plaintiff’s products (Microsoft / Motorola)
Weil, Gotshal & Manges (Washington)
District Court Enters the FRAND Fray* A number of federal court decisions and recent enforcement actions by the US antitrust agencies have highlighted the importance of abiding by commitments to license patents that have been declared essential (SEPs) on “fair, reasonable, and (...)

The US Court of Western District of Washington awards $14.5 million of damages due to breached commitments to license certain standard-essential patents on FRAND terms (Microsoft / Motorola)
McDermott Will & Emery (Washington)
,
McDermott Will & Emery (Washington)
In the long-running patent dispute between Microsoft and Motorola, a U.S. District Court jury in Seattle found that Motorola breached its commitment to license certain standard-essential patents on fair, reasonable and non-discriminatory (FRAND or RAND) terms. The jury awarded Microsoft (...)

The German Regional Court of Düsseldorf makes reference for a preliminary ruling to the CJEU on standard-essential patents (Huawei / ZTE)
Ashurst (Milan)
German Court makes reference for a preliminary ruling to the CJEU on standard-essential patents* On 21 March 2013, the Landgericht Düsseldorf (“Düsseldorf Regional Court”) made a reference (the order is only available in German) for a preliminary ruling to the Court of Justice of the European (...)

The EU Commission announces the finalization of preliminary investigation into Europe’s five leading telecom operators concerning the standardization process for future mobile communications services and the likelihood of competition foreclosure (E5)
DLA Piper Weiss-Tessbach (Vienna)
European Commission closes preliminary investigation into E5* On 7 March 2013 the European Commission announced that it had closed its preliminary investigation into E5, i.e. Europe’s five leading telecom operators (Deutsche Telekom, France Telecom, Telefonica, Vodafone and Telecom Italia), (...)

The Shenzhen Intermediate Court decides that a telecom company abused its patent rights by requiring to pay excessive royalties for essential patents for mobile telephone technology (Huawei / America IDC)
Renmin University of China
I. The background of Huawei vs. America IDC anti-monopoly case for abuse of essential patents in standard In this case, the plaintiff, Huawei Technology Co., Ltd. (hereinafter referred to “Huawei”) mainly provides products and services to the communication operators, professional network owners, (...)

The US DoJ and PTO issue a policy statement on remedies for standards-essential patents subject to (F)RAND commitments
DLA Piper Weiss-Tessbach (Vienna)
U.S. DOJ and PTO issue policy statement on remedies for standards-essential patents subject to (F)RAND commitments* On January 8, 2013 the U.S. Department of Justice, Antitrust Division (DOJ) and the U.S. Patent and Trademark Office (USPTO) issued a policy statement on remedies for (...)

The EU Commission sends a statement of objections to a mobile operator over alleged misuse of mobile phone standard essential patents (Samsung)
Van Bael & Bellis (Brussels)
On 21 December 2012, the European Commission announced that it had sent Samsung a Statement of Objections (“SO”) over its alleged misuse of mobile phone standard essential patents. In January 2012, the Commission had opened a formal investigation against Samsung Electronics following (...)

The EU Commission sends statement of objections regarding its alleged abuse of mobile phone standard-essential patents (Samsung)
Ashurst (Milan)
European Commission sends Samsung Statements of Objections regarding its alleged abuse of mobile phone standard-essential patents* On 21 December 2012, the European Commission sent a Statement of Objections to Samsung, based on concerns that Samsung’s conduct in seeking injunctions against (...)

The Milan Tribunal rejects application for an injunction against the sale of the iPhone 4S (Samsung / Apple)
Ashurst (Milan)
Italian Court rejects Samsung’s request for injunction against Apple in Italy* On 5 January 2012 an Italian Court rejected Samsung’s request for an injunction against Apple in relation to the sale of the iPhone 4S in Italy. Samsung alleges that Apple is violating a number of its patents, which (...)

The U.S. FTC files complaint concerning harm of competition on the relevant central processing unit and graphics processing unit markets (Intel)
Stanford University - Stanford Law School
FTC files complaint against Intel Corp.* On 16 December 2009 the FTC issued an administrative complaint against Intel Corp. (“Intel”) claiming that Intel has violated Section 5 of the FTC Act through practices that harm competition in the relevant central processing unit (“CPU”) and graphics (...)

The EU Commission welcomes public declaration on FRAND terms to patents essential for various standards set by the ETSI (IPCom)
Ashurst (Milan)
IPCom publicly accepts to take over Bosch’s FRAND terms commitments* On 10 December 2009, the European Commission issued a press release regarding the public declaration by IPCom, a German IP licensing company, in relation to the disputes on a portfolio of patents key to mobile standards (...)

The Japan Fair Trade Commission challenges "essential" patent licenses (Qualcomm)
Jones Day (Tokyo)
,
Jones Day (Tokyo)
,
Jones Day (Tokyo)
The Japan Fair Trade Commission ("JFTC") has announced a cease and desist order requiring that Qualcomm Inc. rescind license provisions that required licensees to cross-license their patents to Qualcomm and refrain from asserting their own patents against Qualcomm or Qualcomm licensees. The (...)

The Japan Fair Trade Commission issues a cease and desist order against a company for having coerced japanese manufacturers to conclude a restrictive licence agreement on essential patents (Qualcomm)
Japan Fair Trade Commission (Tokyo)
Cease and Desist Order against QUALCOMM Inc orporated* The Japan Fair Trade Commission (JFTC) has investigated QUALCOMM Incorporated (QUALCOMM) in accordance with the provisions of the Antimonopoly Act (AMA) and found it to be in violation of Article 19 of the AMA (falling within Paragraph 13 (...)

The German Federal Court of Justice rules on antitrust defense to infringement of standards-related patents on the market for writeable optical media (Orange Book)
Ashurst (Milan)
German Federal Court of Justice rules on antitrust defense to infringement of standards-related patents* On 6 May 2009 the German Federal Court of Justice handed down a landmark judgment (KZR 39/06 – Orange-Book-Standard) concerning the use of the competition law defense regarding compulsory (...)

The OECD holds a roundtable on competition, patents and innovation
OECD - Competition Division
Executive summary, by the Secretariat Considering the discussion at the round table, the delegates’ written submissions and the Secretariat’s background paper, several key points emerge: (1) The pressure of competition can spur innovation, and so can the promise of exclusive intellectual (...)

The French Competition Authority sanctions a laboratory for having abused of its dominant position in the market for certain medicinal products intended for hospitals (Sandoz laboratories)
Autorité de la concurrence (Paris)
Press Release published on the official website of the French Competition Authority. Laboratoires SANDOZ sanctioned for abusing their monopoly in the cyclosporin market.* In a decision dated 24th July, 2003, the Conseil de la concurrence imposed sanctions on laboratoires SANDOZ (which has now (...)

Mergers

The EU Commission conditionally clears a merger in the market of semiconductors (Qualcomm / NXP)
Van Bael & Bellis (Brussels)
On 18 January 2018, the European Commission (the “Commission”) conditionally approved the acquisition of NXP by Qualcomm. Both companies are important producers of chipsets used for smartphones and other applications. During an in-depth merger review, the Commission identified three competition (...)

The Chinese MOFCOM conditionally clears a merger in the smartphone market (Microsoft / Nokia)
Jones Day (Beijing)
,
Gibson Dunn (Hong Kong)
,
Jones Day (Beijing)
On April 8, MOFCOM approved Microsoft’s acquisition of Nokia’s mobile handset business. MOFCOM’s review focused on three product markets: smartphones, mobile operating systems, and the licensing of standard-essential and non-essential patents for smartphones. Geographically, MOFCOM focused on (...)

The EU Commission approves joint-venture offering enhanced security services for applications such as mobile payments running on smartphones and tablets (Giesecke & Devrient / Gemalto)
Ashurst (Milan)
European Commission approves joint-venture in the market of Trusted Execution Environments* On 7 November 2012, the European Commission has approved, subject to conditions, the creation of the joint-venture (“the JV”) between ARM, Giesecke & Devrient and Gemalto, under the European (...)

The U.S. DoJ clears acquisition involving standards-essential patents relevant to wireless devices (Google / Motorola Mobility)
Stanford University - Stanford Law School
U.S. DOJ clears Google’s acquisition of Motorola Mobility and other transactions involving standards-essential patents* On 13 February 2012 the U.S. Department of Justice (“DOJ”) announced the closing of investigations concerning the acquisition of Motorola Mobility Holdings Inc. (“Motorola (...)

The EU Commission clears subject to conditions an acquisition on the market for video communication systems via internet (Cisco / Tandberg)
Ashurst (Milan)
European Commission clears Cisco’s acquisition of Tandberg, subject to conditions* On 29 March 2010, the European Commission approved the proposed acquisition of Norway’s Tandberg, a vendor of video communications systems, by Cisco Systems subject to conditions. On the same day, just one hour (...)

The U.S. FTC proposes conditional consent order approving an acquisition of the voting securities of a major petroleum explorer and marketer (Chevron / Unocal)
Sheppard Mullin (Los Angeles)
FTC Approves Chevron’s Acquisition Of Unocal On Condition Of Release Of Patent Rights To CARB Reformulated Gasoline* The Federal Trade Commission has proposed consent orders that will approve Chevron’s acquisition of the voting securities of Unocal, which will then merge into a Chevron (...)

Procedures

The EU Commission publishes a fact sheet on IP rights enforcement and a communication setting out the EU’s approach to standard essential patents
Simmons & Simmons (London)
,
Simmons & Simmons (London)
The European Commission today published a Fact Sheet on Intellectual Property Rights Enforcement and a Communication setting out the EU’s approach to Standard Essential Patents (SEPs). In recognition of what it perceives as the strategic importance of SEPs and Europe’s need to grasp the enormous (...)

The US Supreme Court holds that patentees extinguishes patents rights on a product once it makes a sale of it (Impression Products / Lexmark International)
McDermott Will & Emery (Washington)
Reversing long-standing Federal Circuit precedent, the United States Supreme Court has now held that a patentee extinguishes its patent rights on a product upon its sale of that product, regardless of (1) whether the patentee placed a restriction on the sale (prohibiting reuse or resale), or (...)

The UK Patents Court defers hearing on competition law issues in a patent litigation until infringement of patents is established (Illumina / Premiatha)
Fieldfisher (London)
,
Fieldfisher (London)
Illumina, Inc v Premiatha Health PLC [2016] EWHC 1726 (Pat)*In July 2015 the Court of Justice of the European Union (CJEU) handed down its judgment in Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH (Case C-170/13). In that Judgment the CJEU ruled that in proceedings for an (...)

The UK Patents Court declines application to transfer dispute on FRAND to UK Competition Appeals Tribunal (Unwired Planet / Huawei / Samsung)
Stephenson Harwood (London)
UK Patents Court refuses to transfer Unwired Planet competition claims to CAT*Background and status of proceedingsIn summary, Unwired Planet is asserting a number of patents against Huawei and Samsung, both of whom sell mobile devices and infrastructure equipment. The litigation has been (...)

The U.S. International Trade Commission (ITC) decides to review the entire final initial determination issued by the presiding administrative law judge concerning RAND defenses in a case regarding potential infringements of standard essential patents (LSI / Realtek)
DLA Piper Weiss-Tessbach (Vienna)
U.S. ITC reviews the ALJ’s entire initial determination in the LSI-Realtek 337 case* On 17 October 2013 the International Trade Commission (ITC) issued a Notice determining that it will review the final initial determination (ID) issued by the presiding administrative law judge (ALJ) of 18 July (...)

A U.S. District Court determines the RAND licensing rate per Wi-Fi chip while considering related issues such as hold-up, royalty stacking and reverse hold-up (Innovatio)
DLA Piper Weiss-Tessbach (Vienna)
The second judicial determination of F/RAND rates* On 27 September 2013 the second judicial determination – after Judge Robart’s ruling in Microsoft v Motorola – on F/RAND royalty rates was handed down by Judge Holderman. Innovatio IP Ventures LLC owns several patents essential to the 802.11 (...)

Regulatory

The OECD holds a roundtable on the licensing of IP rights and competition law
OECD - Competition Division
IP rights, which create temporary exclusive rights that protect investments in research and some creative activities, have taken on an increasingly prominent and extensive role in economic activity – and in market competition as well. As the economy digitalises and the importance of intangible (...)

A research report finds that setting open technology standards through voluntary participation in Standards Development Organisations results in innovative and competitive industries
Compass Lexecon (Brussels)
Economic Impact of Technology Standards: The past and the road ahead - Key Findings* Our research has shown that industries based on open technology standards, agreed through voluntary participation in industry bodies, have an impressive record of innovation. We looked in particular at the (...)

The US FTC and DoJ issue antitrust guidelines for the licensing of intellectual property
Mc Dermott Will & Emery (Orange County)
,
McDermott Will & Emery (Washington)
On January 12, 2017, the Federal Trade Commission and the Antitrust Division of the US Department of Justice issued updated Antitrust Guidelines for the Licensing of Intellectual Property (the Guidelines). The revised Guidelines follow nearly half a year of consideration and public commentary. (...)

The OECD holds a roundtable on competition, intellectual property and standard setting
OECD - Competition Division
Executive summary, by the Secretariat * Considering the discussion at the hearing, the background paper and the delegates’ and experts’ written submissions, several key points emerge: (1) The existence of standards has encouraged ICT innovation and fast and continuing penetration of ICT devices (...)

The OECD holds a roundtable on standard setting
OECD - Competition Division
Standard setting yields substantial benefits to consumers and often promotes competition to benefit consumers. Nonetheless, at times, standard setting can give rise to potential consumer harms. By bringing together different players in an industry, the standard setting process provides an (...)

The OECD holds a second roundtable on competition, patents and innovation
OECD - Competition Division
Executive summary, by the Secretariat Considering the discussion at the roundtable, the delegates‘ written submissions and the Secretariat‘s background paper, several key points emerge: (1) There has been a significant increase in the number and complexity of patent applications filed in the (...)

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